Singapore patent law changes on 1 January 2020 - supplementary examination is going but this isn't a bad thing

Date: 2019-03-18
Authors: Desmond Tan & Karen Bentley

Substantial changes to Singapore patent law will come into force on 1 January 2020. The key change is the removal of the option to request examination on the basis of claims allowed in another jurisdiction. That is, supplementary examination.

The process of undergoing thorough local examination for every application will result in greater certainty in relation to the validity of granted patents in Singapore and will serve to balance any concern from patent applicants as to the loss of the most cost-effective option for attaining a notice of allowance. Plus, the Singapore Patent Office, IPOS, will remain a member of the Global Patent Prosecution Highway (GPPH) program and also has PPH programs with a number of other patent offices, thereby still providing applicants with an opportunity to leverage off another jurisdiction.

But for now, there are steps that can be taken to ensure supplementary examination remains available in some circumstances beyond 1 January 2020.

Background

Amendments were made to the Singapore Patents Act and Rules in the final quarter of 2017. The major change from that round of amendments relating to the removal of the option to request supplementary examination will only come into force on 1 January 2020. That is, the option to enable a Singapore patent application to attain a notice of allowance based on the allowance/grant or favourable examination findings of a corresponding application in selected jurisdictions.  

Accordingly, from 1 January 2020 onwards, the option to request supplementary examination will no longer be available for the following Singapore patent applications:

- PCT applications entering the national phase in Singapore which have an international filing date after 1 January 2020;

- divisional applications having a lodgment date after 1 January 2020; and

- complete/convention applications having a date of filing after 1 January 2020.

How can I still rely on supplementary examination?

If you or a client have a need or desire to rely on supplementary examination, it would be advisable to carry out the following assessments during 2019:

1. File your PCT application before 1 January 2020 and subsequently enter the national phase in Singapore within the usual deadline.

2. If the national phase was not entered in Singapore within the usual deadline, an 18 month extended national phase entry deadline is available, and supplementary examination is available as long as the international filing date is before 1 January 2020.

3. If there are pending applications in Singapore that will likely require a divisional application to be filed, and there are corresponding claims in another jurisdiction that can be relied on for supplementary examination, file those divisionals before 1 January 2020.

4. If you are unlikely to have claims available to rely on by the deadline for your existing Singapore applications, and that supplementary examination deadline falls after 1 January 2020, file a divisional application in Singapore before 1 January 2020.

5. Ensure that any first/convention filings due to be filed in Singapore after 1 January 2020 are filed earlier.

PPH - an alternative to supplementary examination going forward

We believe that from 2020 onwards, a shift in Singapore practice will see an increase in Patent Prosecution Highway (PPH) requests, whereas there was previously little motivation for applicants to do so. IPOS is a member of the Global Patent Prosecution Highway (GPPH) program (24 member offices including the Japan Patent Office, United States Patent and Trademark Office, Korean Intellectual Property Office and the German Patent and Trademark Office), and also has respective PPH programs with the China National Intellectual Property Administration, Mexican Institute of Industrial Property and the European Patent Office.

FPA has been helping our clients with their patent applications in Singapore for many years, and has a keen understanding of the continual changes which have been taking place in Singapore patent law. Through FPA’s Singapore office, FPA is well placed to provide guidance in relation to the issues that you may face in relation to the change. For example, there remain cost-effective ways to streamline patent prosecution in Singapore that FPA is continually refining to save time and costs for clients. FPA would welcome the opportunity to assist in an assessment of your Singapore patent portfolio, and to identify both issues and opportunities for you in the course of our assessment.

To find out if we can help you further, please contact the authors of this article or your desired FPA attorney.